Eligibility issues During Inter Partes Review Proceedings

Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. § 311(b).

A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings. Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?

In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).

On appeal, Uniloc argues that the denial on 101 grounds was improper:

Interpreting the IPR statutes to allow a § 101 challenge through the back door, merely because a patent owner exercises the right to propose a narrowing amendment, threatens to disrupt the streamlined and focused nature of the IPR adjudication. Amended claims that meet the statutory requirements for motions to amend are narrower than claims that have previously been examined in full and, to the extent there is any room for further challenges under § 101, an accused infringer that cannot avail themselves of a PGR or CBM challenge can still assert ineligibility in a civil action for infringement.

In its briefing, the PTO agrees that § 311(b) limits the scope of petition, but focuses on § 318(a) that requires the PTO to address “patentability of . . . any new claim added” during the course of the proceeding. For the PTO, Uniloc’s approach appears to be off-the-rails because it could force the PTO to issue new claims via IPR that were never examined for eligibility, utility, written description, or enablement.

One distinguishing feature here, however, is that PTO issued particular regulations regarding amendments and Section 112 — requiring a showing of “support in the original disclosure” for any amendments. The regulations say nothing about eligibility. 37 C.F.R. § 42.121(b). The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.

The additional feature of the argument here has to do with the nature that IPR amendments are narrowing amendments. Narrowing amendments basically do not raise new eligibility problems.

In its brief, Uniloc also has an alternative request — that the Court remand for a new eligibility analysis based upon the PTO’s new eligibility guidance. (The PTAB’s denial here was made prior to the Jan 2019 eligibility guidance, and that guidance was recently updated in October 2019). USPTO responds that Uniloc did not explain how its amendments would be sufficient to overcome the collateral district court invalidity finding — “Uniloc bears the burden of showing that the Board committed reversible
error.”

Askeladden filed an amicus brief supporting the PTO and patent challenger arguing that the Board has “a statutory obligation to consider the subject-matter eligibility” of proposed amended claims during IPR proceedings.

Logically, there is no reason that a narrowing amendment can’t introduce a “new” 101 issue into claims that are already ineligible or unpatentable over the prior art. Logically, the opposite is true.

This is basic stuff. Whiffing on softballs or intentionally m u c k ing up the issues is beneath you (or it was, once upon a time). Dennis needs to try harder and the commenters here who aren’t br-a-in-d-ea-d sycophants need to hold his feet to the fire so the misinformation doesn’t spread further than it already has.

The Finnegan Firm notes that this proposed rule change will add these summarized requirements to Rule 42.121:
(1) “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section:”
(2) “petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable”

(3) “the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason supported by the evidence of record”

These proposed additions to Rule 42.121 “affirmatively place upon Patent Owner the “burden of persuasion” to establish both the requirements of the statute regarding motions to amend and the existing statutory and rule requirements of Rule 42.121 [listed in (1) above]” which include:
“propose a reasonable number of substitute claims
not enlarge the scope of the claims of the patent or introduce new matter
respond to a ground of unpatentability involved in the trial
show support in the original disclosure of the patent for each claim that is added or amended
show support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”

NONE of these things are properly called examination under the patent laws:

35 U.S.C. 131 Examination of application.

The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

To suggest an answer to the key question of which IPR amended [correctly, substituted] claims might get allowed without a normal [application] examination, the short answer is “very few.”
First, even now, claim substitution is rarely requested by patent owners, out of fear of intervening rights or inability to make timely rational decisions about original claims.
Secondly, unless the substituted claims clearly preclude infringement by the Petitioner they are going to get a far better than normal examination.
Thirdly, even if the Petitioner does not effectively oppose patentability of substitute claims, the Board itself was and still is obligated to examine such claims on the grounds in Rule 42.121 (1) above.

(1) “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section:”
(2) “petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable”

This seems reasonable.

(3) “the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason supported by the evidence of record”

This seems far less reasonable. To my mind, substitute claims should be entered as a matter of right once 1 & 2 above are settled. The idea that the single set of substitute claims might satisfy 1 & 2 above, and still not be entered by “discretion” of the PTAB does not seem to comport with the Congressional intent.

In your hurry to play the race card, Malcolm you did not pick up the nuance that Greg provides:

The items of 1) and 2) have been met by a preponderance of the evidence, and yet 3) over rides ANY such showing at the discretion of a “political” entity (executive branch entity with no oversight or control) if there is ANY shred of support.

That ANY shred is easily seen to be the “losing end” (even down to a de minimus level) of the already shown 1) and 2) items.

In other words, 1) and 2) become entirely discretionary – at the very slimmest of “reasons.”

Rather than “ catch-all, plainly, to prevent game playing and abuse” — it is the opposite: an open invitation to the Executive (political) entity to engage in game-playing and abuse.

For someone 0bsessed with the Executive branch outside of patent law, your anti-patent cognitive dissonance is on full display here because of your desired Ends of being able to denigrate patents.

It is standard practice for IPR petitioners to challenge subject matter eligibility under Section 101 in opposition to a motion to amend; it’s not a back-door, and not because petitioners particularly want to raise it. It’s to avoid possible estoppel under the AIA; Section 315 applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” So if Section 101 issues can be raised in opposition to a motion to amend (an undecided issue), petitioners must raise it or be estopped. So until a decision comes out definitively saying that a petitioner cannot raise 101 issues in opposition to a motion to amend, petitioners will have no choice but to continue to raise it in the fear that some court will later say you should have done it.

Most petitioners don’t even really like raising 101 issues in IPR, because the PTO Guidelines on 101 are MUCH more forgiving than Federal Circuit precedent on what’s eligible (and many would argue, are inconsistent with CAFC precedent), and 101 issues consume valuable pages of your opposition to the motion to amend (which must address 102, 103, 112, etc.). You get the same number of pages to oppose the motion to amend regardless of how many challenges you raise.

I really do not understand why this is such a hard issue to decide. During the bygone days of inter partes reexamination, the rule was clear — new or amended claims are examined under 101/112, but ONLY as to the amended subject matter.
You don’t open up the entire claim for reevaluation under 101/112, you only look to see if the amendments themselves introduced a 101/112 issue. This should be the rule in IPR (even though, in most cases, it would foreclose 101 challenges as eligibility issues are rarely created by narrowing amendments).

If the rule was otherwise, then because of estoppel, IPR petitioners have to raise ALL of their 112 arguments, as to even the original claim language, in opposition to a motion to amend. There is no principled reason why the 101 issues should be treated differently in this regard. In any event, practitioners deserve a resolution to this question, as there’s too much time being wasted with “CYA” arguments in oppositions to motions to amend.

I hear what you are saying and not to distract from the point that you are making, I wanted to provide one small — but critical — “correction:”

“ Most petitioners don’t even really like raising 101 issues in IPR, because the PTO Guidelines on 101 are MUCH more forgiving than Federal Circuit precedent on what’s eligible (and many would argue, are inconsistent with CAFC precedent),”
==> It is the Judicial Branch ‘precedents’ (along the entire spectrum of SC through CAFC and lower) that are themselves self-conflicting.

The criticality if this own entirely Judicial Branch self-conflict cannot be understated.

I think most people would agree with you that a narrowing amendment rarely introduce 101 problems, except the USPTO doesn’t seem to agree with that. Go back to the Life Science examples (number 29 – Diagnosing and Treating Julitis, May 2016). Claim 1 is deemed eligible in the example while claim 2, which adds an additional step, is deemed ineligible. The additional step is a diagnostic step which the CAFC has made a mess out of, but it’s still a narrowing addition to the claim. The narrowing amendment turned an eligible claim into an ineligible one according to the CAFC. I’ve seen that example cited by Examiners multiple times, so the addition of a narrowing amendment doesn’t really mean much right now.

This also happens to be the example cited in Cleveland Clinic v True Health (non-precedential) where the CAFC said that the examples and guidance published by the USPTO doesn’t even deserve Skidmore deference. Right now I’d say it’s almost impossible to know what constitutes best practices in an IPR. The examples and guidance published by the USPTO don’t properly account for case law, so what good is a patent if it a court will immediately invalidate it. If incorporating a law of nature, an abstract idea or a natural phenomena into a useful application is patentable, then the entire medical field of medical diagnostics is not considered useful. For some reason I don’t think any doctors or medical professional will agree with that.

I hear you too, and not to argue (directly) against your point of “ The examples and guidance published by the USPTO don’t properly account for case law, so what good is a patent if it a court will immediately invalidate it.” — but you miss the more important point that the Patent Office stated in why they were changing the examination protocol away from a case by case (e.g., Common Law) approach: the case law itself “does not properly account for case law.”

This is directly because case law (Common Law) — from the top of the Supreme Court on down — is a self-conflicting mess of a Gordian Knot.

There is a giant elephant in the room here everyone.

Every single branch of the government has noted this Gordian Knot, from the (notably fractured) CAFC, to the Director of the Patent Office himself, to members of both the Senate and Congress.

The score board is broken.

No one will be able to have the score correct until the score board is fixed.

I know what you mean, but I think the issue of “why” the USPTO changed the procedure/analysis they are using is less important that than the end result. In the end, the patent owner wants a valid patent that will hold up regardless of how it’s challenged. They don’t care what procedure is used to get to the end in most cases. The attorneys and agents prosecuting the application get to suffer through the procedural mess for the most part. The conflicting case law, despite being conflicting, I found to be a much more useful tool, because then at least there was a foundation of eligibility that could be used if the patent is challenged. Without a least some foundation in a specific case to support the eventual 101 challenge, it’s extremely hard to protect the patent.

You’re completely right that it’s a Gordian Knot right now (I would have used a more “colorful metaphor” to describe it, but that’s just semantics). Eligibility issues are beginning to swallow up all of patent law specifically as the SCOTUS warned against. Either the Fed Cir has to get their head out of the collective hind ends, or Congress will have to step in and fix it. I’m not sure which option would be better. The drafts I’ve seen on potential 101 changes from Congress leave quite a bit to be desired, so it’s a tough call.

This statement: “the patent owner wants a valid patent that will hold up regardless of how it’s challenged. They don’t care what procedure is used to get to the end in most cases,” is clearly wrong. Not all procedures for challenging subject matter eligibility under 101 are created equal. If this was the case, Uniloc wouldn’t be fighting so hard to avoid adjudication of 101 issues before the PTAB.

The reason they are fighting so hard is simple — the Uniloc cases are pending in the Eastern District of Texas, which is notoriously hostile to 101 motions and won’t even let you bring the motion until after you’ve spent millions in discovery and are on the eve of trial. Uniloc moved its headquarters to Eastern Texas for precisely that reason. It knows that if it can avoid adjudication of 101 issues before the PTAB, most likely it will never actually face a 101 challenge in court because most of the defendants will settle long before simply to avoid the costs, and Uniloc knows that the challenge is unlikely to succeed anyway given the court’s systematic bias against 101 defenses.

I personally do not think, given the statutory framework, that the PTAB should be deciding 101 issues in IPR unless the 101 issue was specifically created by the amendment as opposed to the original claim language (which will rarely if ever occur). But to argue that patent owners don’t care where the issue is adjudicated is just downright wrong.

Uniloc is a disgusting company and everyone involved with the company probably should spend some time in a jail cell, looking in a mirror, and reflecting upon their disgusting choice of how to make a living. How’s that for some harsh reality?

Their claims are ineligible c r-a-p. That was determined in a Texas court. Now they are playing games at the PTO and trying to amend their claims to recite more abstract nonsense. Most decent patent attorneys would v 0 mit in their mouths if they saw the substitute claims.

Rando cl u-e-le-ss maximalist commenters can rant on about “Gordian knots” and whatever other s e w age flows from Bildo’s brain until the cows come home. The rest of us know these claims are pure unadulterated s-h–t, and there is no fixing them because Uniloc didn’t invent anything. Of course they didn’t invent anything! They’re just a bunch of tr-0lling @ h0les trying to extort their targets.

Not sure why YOU of all people think that such would be funny – given how NONE of your posts EVER provide anything cogent on the Rule of Law (especially as that intersects with Patent Law — you know, the reason WHY this forum exists).

Dennis, I know it must be rough to be in your shoes but I’ll just ask nicely: try harder not to parrot the patentees absurdist positions in cases like this. Hulu nailed them to wall: logically, there is no reason that a narrowing amendment can’t introduce a “new” 101 issue into claims that are already ineligible or unpatentable over the prior art. Logically, the opposite is true.

This is basic stuff. Whiffing on softballs or intentionally m u c k ing up the issues is beneath you (or it was, once upon a time). Try harder please.

“ An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings. Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?”

There is a much larger elephant in the room.

Claim amendments made post grant (as in the IPR situation) are not properly examined as an examiner during normal prosecution would examine amendments.

The notion that amendments may not enlarged scope does NOT remove the very real flaw in lack of proper Executive Branch Administrative Agency examination by examiners.

As I have pointed out, merely “moving the scope in” cannot tell you whether that moved-in scope is “proper.”

Some have ‘banked’ (in a rather unthinking manner) that such “moved-in” scope is proper because the original wider scope was deemed proper during the original examination.

The fallacy of course is that THAT originally deemed proper limit is being thrown out in the post grant procedure.

That “outer fence post” thus cannot serve as ANY type of “well this claim is narrower so it must be ok” demarcation of where to put a new fence post.

Post grant review thus has a fatal flaw in its design of amendments after grant, but without true new examination — by examiners.

It really is like you are Trump and cannot see anything except what you want to see. You are so quick to denigrate my post, and then turn around and note that “hey, there’s an elephant here.”

Of course, you ONLY want to see “the elephant” that fits into your bucket while not wanting to recognize that my statement is the better statement of the situation, as ALL matters of “examination” are impacted and not just the Ends-driven ones that you want to rant about.

Jeez Louise, or whatever your name is: when are you doing to learn to stop being so doctrinaire – especially when YOU’RE WRONG?

If I wanted to be like you, I’d just stop right there. But for any other readers:

IPRs are meant to look at whether claims meet the requirements of 102 and 103. 101 is not part of the discussion in an IPR. Ever.

By definition, the only thing a narrowing amendment can do is add limitations that might get around 102 or 103 – the two issues at play in an IPR.

As with all amendments, there has to be support for the newly added limitations. So 112 gets in there, but only with respect to the specific question of whether or not the newly added verbiage is supported by the spec. That’s because we’re dealing with a granted claim, which is presumed valid, except with respect to 102 and/or 103, constituted grounds on which the IPR was instituted.

And that’s why 101 never enters the picture in an IPR: the claim was granted once, it’s presumed to pass muster under 101, and adding limitations can’t remove it from that presumptively valid status under 101. Or in language that you can understand: Congress didn’t authorize the PTO to consider 101 in IPRs, not in the claims as challenged, and not in amended claims.

First, I am not wrong.
Second, you come nowhere close to the point I present in making any type of counter to support your contention that I am wrong.

I “get” what you are saying here in that this particular avenue of post grant review is specifically aimed at only the 102/103 question.

I don’t have a problem with this aspect of your post.

But you absolutely miss the point that I present.

Let me state it again for you (in purely 102/103 aspects):

Your initially examined and granted patent was “ok” — in the 102/103 sense — with a certain “fence post” based on the claims.

In an IPR, that “fence post” is shown to have been wrong.

Patent holder basically says, “ok, that initial ‘fence post’ was wrong, here are changes smaller than that original ‘fence post’ that I want as my valid patent.

The problem is that in the post-grant, IPR land, there is no examination by an examiner for that smaller “fence post” area, and the fallacy is that “smaller” alone suffices for a valid patent — essentially because of the original larger area was thought to have been correctly staked out.

Once the larger area is shown to have been wrong, there is NO gradient measure of “less land within a new fence post” that has been examined by an examiner to indicate a valid patent.

So even if for only 102/103, the thought of a NON-examined “smaller scope” patent amendment being “ok” has a fundamentally flawed basis.

And this is FOR that directly limited 102/103 aspect — which is exactly why I state that there is a larger elephant in the room!

The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.

This argument is fine as far as it goes, but it really will not get Uniloc where it wants to land. The PTO’s regulation merely means that Uniloc (as the requestor of the amendment) bears the burden of showing support before the amendment can be entered. It does not mean that this is the only possible obstacle to the amendment being entered. It certainly does not foreclose the PTAB making a determination—on the basis of its §318(a) obligations—that the claim being proposed is not substantively patentable.

The only §318(a) obstacle to the amendments that is foreclosed by Uniloc’s “no regulation on point” argument is that the PTAB does not have the regulatory authority to place the burden of proving §101 eligibility on Uniloc. If the IPR petitioner challenges the §101 eligibility of the proposed amendments (on collateral estoppel grounds from an Art. III tribunal, no less!), then the lack of regulation on this point is simply quite beside the point.

Uniloc (being the requestor of the amendment) is NOT a USPTO examiner and their “showing” is NOT an examination that brings about the presence and level of presumption of validity of a GRANTED US patent.

The PTAB in any of their deliberation of §318(a) — or otherwise — is NOT an examination by a USPTO examiner that brings about the presence and level of presumption of validity of a GRANTED US patent.

There is a fundamental structural flaw in the post grant mechanism in regards to ANY amendments that in effect tear down any of the fence posts of the originally granted patent.

Dennis, posting this article without posting right up front the claims at issue (the unamended and amended claims) is … an odd move … and totally obscures what is actually happening.

Also, your assertion that “narrowing amendments basically do not raise new eligibility issues” is inaccurate. If the issue is avoiding the prior art, then adding an amendment reciting ineligible subject matter almost ALWAYS will raise a new eligibility issue (and all amendments to avoid prior art are “narrowing” unless they are ignored for some doctrinal reason… e.g., because they are ineligible…).

C’mon man. Have another cup of coffee.

For what it’s worth, the IPR regime needs to be expanded to include 101 issues. It only makes sense.

26. A system for adjusting a license for a digital product over time, the license comprising at least one allowed copy count corresponding to a maximum number of devices authorized for use with the digital product, comprising:

a communication module for receiving a request for authorization to use the digital product from a given device, the request comprising:

license data associated with the digital product; and a device identity generated at the given device at least in part by sampling physical parameters of the given device;

a processor module in operative communication with the communication module;

a memory module in operative communication with the processor module and comprising executable code for the processor module to:

verify that the license data associated with the digital product is valid;

in response to the license data being verified as valid, determine whether the device identity is currently on a record;

in response to the device identity already being on the record, allow the digital product to be used on the given device;

in response to the device identity not currently being on the record, temporarily adjust the allowed copy count from its current number to a different number by setting the allowed copy count to a first upper limit for a first time period, the first upper limit corresponding to the maximum number of devices authorized to use the digital product during the first time period;

calculate a device count corresponding to total number of devices currently authorized for use with the digital product; and

when the calculated device count is less than the first upper limit, allow the digital product to be used on the given device.

Good grief. Sure, use a computer to keep track of the number of “authorized” devices in use (because devices that are “authorized” to use “licensed content” are “totally different from all those other devices in the prior art derp!”).

I’m shocked — shocked! — that these guys would try to “narrow” their claim with even more abstract ineligible nonsense.

Thanks for posting the claims. My advice to the world: practice these claims and any claims like them without fear. Anyway halfway decent attorney will get the tr 0lls off your back, and a decent one will get you some fees in the form of sanctions on top of everything else.